Minnesota Session Laws - 1998, Regular Session

                            CHAPTER 315-H.F.No. 2315 
                  An act relating to commerce; regulating trademarks and 
                  service marks; defining terms; providing remedies; 
                  amending Minnesota Statutes 1996, sections 333.18; 
                  333.19, subdivision 1; 333.20, subdivisions 1 and 2; 
                  333.21, subdivision 2; 333.23; 333.24; 333.25; 333.26; 
                  and 333.29, subdivision 1; proposing coding for new 
                  law in Minnesota Statutes, chapter 333; repealing 
                  Minnesota Statutes 1996, section 325D.165. 
        BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF MINNESOTA: 
           Section 1.  Minnesota Statutes 1996, section 333.18, is 
        amended to read: 
           333.18 [TRADEMARKS AND SERVICE MARKS; DEFINITIONS.] 
           Subdivision 1.  [TRADEMARKS AND SERVICE MARKS.] (1) (a) The 
        term "trademark" as used in sections 333.18 to 333.31 means any 
        word, name, symbol, or device or any combination thereof adopted 
        and used by a person to identify goods made or sold by that 
        person and to distinguish them from goods made or sold by 
        others.  Trademark includes a mark used on or in connection with 
        the goods of one or more persons other than the owner of the 
        mark to certify regional or other origin, material, mode of 
        manufacture, quality, accuracy, or other characteristics of the 
        goods or that the work or labor on the goods was performed by 
        the members of a union or other organization.  The term also 
        includes a mark by members of a cooperative, an association, or 
        other collective group or organization and includes marks used 
        to indicate membership in a union, an association, or other 
        organization. 
           (2) (b) The term "service mark" as used in sections 333.18 
        to 333.31 means a word, name, symbol, or device or any 
        combination thereof adopted and used by a person to identify 
        that person's services and to distinguish them from services of 
        others and includes without limitation the marks, names, 
        symbols, titles, designations, slogans, character names, and 
        distinctive features of radio or other advertising used in 
        commerce.  Service mark includes a mark used in connection with 
        the services of one or more persons other than the owner of the 
        mark to certify regional or other origin, material, quality, 
        accuracy, or other characteristics of the service or that the 
        work or labor on the services was performed by members of a 
        union or other organization.  The term also includes a mark used 
        by members of a cooperative, an association, or other collective 
        group or organization and includes marks used to indicate 
        membership in a union, an association, or other organization. 
           (3) (c) The term "certification mark" means a mark used 
        upon or in connection with the products or services of one or 
        more persons other than the owner of the mark to certify 
        regional or other origin, material, mode of manufacture, 
        quality, accuracy or other characteristics of such the goods or 
        services or that the work or labor on the goods or services was 
        performed by members of a union or other organization.  
           (4) (d) The term "collective mark" means a trademark or 
        service mark used by the members of a cooperative, an 
        association or other collective group or organization and 
        includes marks used to indicate membership in a union, an 
        association or other organization.  
           Subd. 2.  [PERSON.] The term "person" as used herein in 
        sections 333.18 to 333.31 means any individual, firm, 
        partnership, limited partnership, limited liability partnership, 
        corporation, limited liability company, whether domestic or 
        foreign, association, union or other organization.  
           Subd. 3.  [APPLICANT.] The term "applicant" as used herein 
        in sections 333.18 to 333.31 embraces the person filing an 
        application for registration of a mark under sections 333.18 to 
        333.31, the applicant's legal representatives, successors or 
        assigns.  
           Subd. 4.  [REGISTRANT.] The term "registrant" as used 
        herein in sections 333.18 to 333.31 embraces the person to whom 
        the registration of a mark under sections 333.18 to 333.31 is 
        issued, a legal representative, successors or assigns.  
           Subd. 5.  [USED; ADOPTED AND USED.] (1) For the purposes of 
        sections 333.18 to 333.31, a trademark shall be deemed to be is 
        "used" in this state when it is placed in any manner on the 
        goods or their containers or on the tags or labels affixed 
        thereto to them or on displays associated with the goods and 
        such the goods are sold or otherwise distributed in this state 
        for marketing or other legitimate business purposes.  
           (2) For the purpose of sections 333.18 to 333.31, a service 
        mark shall be deemed to be is "adopted and used" when it is 
        adopted and used in connection with the rendering, selling, or 
        advertising of services in this state to identify the services 
        of one person and distinguish them from the services of others, 
        and such the services are rendered for marketing or other 
        legitimate business purposes.  
           Subd. 6.  [ABANDONED; ABANDONMENT.] For purposes of 
        sections 333.18 to 333.31, a trademark or service mark is 
        considered abandoned when either of the following occurs:  
           (1) when its use has been discontinued with intent not to 
        resume that use.  Intent not to resume use may be inferred from 
        circumstances.  Nonuse for two consecutive years constitutes 
        prima facie evidence of abandonment; or 
           (2) when a course of conduct of the owner, including acts 
        of omission as well as commission, causes the mark to lose its 
        significance as a mark. 
           Subd. 7.  [DILUTION.] The term "dilution" means the 
        lessening of the capacity of a famous mark to identify and 
        distinguish goods and services, regardless of the presence or 
        absence of:  
           (1) competition between the owner of a famous mark and 
        other parties; or 
           (2) the likelihood of confusion, mistake, or deception.  
           Subd. 8.  [GENERIC.] The term "generic" means that the 
        registered mark is no longer considered by the public to 
        identify exclusively the goods or services of the markholder as 
        described in the application for the mark. 
           Sec. 2.  Minnesota Statutes 1996, section 333.19, 
        subdivision 1, is amended to read: 
           Subdivision 1.  A trademark or service mark by which the 
        goods or services of any applicant for registration may be 
        distinguished from the goods or services of others shall must 
        not be registered if it:  
           (1) consists of or comprises immoral, deceptive or 
        scandalous matter; or 
           (2) consists of or comprises matter which may disparage or 
        falsely suggest a connection with persons, living or dead, 
        institutions, beliefs, or national symbols, or bring them into 
        contempt, or disrepute; or 
           (3) consists of or comprises the flag or coat of arms or 
        other insignia of the United States, or of any state or 
        municipality, or of any foreign nation, or any simulation 
        thereof of this insignia; or 
           (4) consists of or comprises the name, signature or 
        portrait of any living individual, except with written consent; 
        or 
           (5) consists of a mark which, (a) (i) when applied to the 
        goods or used to identify the services of the applicant, is 
        merely descriptive or deceptively misdescriptive of them, 
        or (b) (ii) when applied to the goods or used to identify the 
        services of the applicant is primarily geographically 
        descriptive or deceptively misdescriptive of them, or (c) (iii) 
        is primarily merely a surname provided, however, that nothing in 
        this subsection clause (5) shall prevent the registration of a 
        mark used in this state by the applicant which has become 
        distinctive of the applicant's goods or services.  The secretary 
        of state may accept as evidence that the mark has become 
        distinctive, as applied to the applicant's goods or used to 
        identify the services, proof of substantially exclusive and 
        continuous use thereof as a mark by the applicant in this state 
        for the five years next preceding the date of the filing of the 
        application for registration; or 
           (6) consists of or comprises a mark which so resembles a 
        mark registered in this state or a corporate, limited liability 
        company, limited liability partnership, cooperative, or limited 
        partnership name in use or reserved in this state by another, or 
        a mark or trade name previously used in this state by another 
        and not abandoned, as to be likely, when applied to the goods or 
        used to identify the services of the applicant, to cause 
        confusion or mistake or to deceive.  The secretary of state may 
        require affidavits by both the applicant and by the holder of 
        the previously registered name or mark in making this 
        determination.  
           Sec. 3.  Minnesota Statutes 1996, section 333.20, 
        subdivision 1, is amended to read: 
           Subdivision 1.  Subject to the limitations set forth in 
        sections 333.18 to 333.31, any person who adopts and uses a 
        trademark or a service mark in this state may file in the office 
        of the secretary of state, on a form to be furnished by the 
        secretary of state, an application for registration of that mark 
        setting forth, but not limited to, the following information: 
           (1) the name and business address of the person applying 
        for such registration; and, if a corporation business entity, 
        the state of incorporation, registration; 
           (2) the goods or services in connection with which the mark 
        is used and the mode or manner in which the mark is used in 
        connection with such the goods or services and the class in 
        which such the goods or services fall,; 
           (3) a description of the mark; 
           (4) the date when the mark was first used in this state by 
        the applicant or a predecessor in business, interest; and 
           (4) (5) the applicant's statement of belief that the 
        applicant is the owner of the mark and that no other person has 
        the right to use such mark in this state either in the identical 
        form thereof or in such near resemblance thereto as might be 
        calculated to deceive or to be mistaken therefor and the mark is 
        in use.  
           Sec. 4.  Minnesota Statutes 1996, section 333.20, 
        subdivision 2, is amended to read: 
           Subd. 2.  The application shall be signed as provided in 
        section 645.44, subdivision 14, and verified by the individual 
        applicant or by a member of the firm or an officer of the 
        corporation, or association or by a manager of a domestic or 
        foreign limited liability company, or association applying, for 
        business entity applicants, by a person with authority to sign 
        on behalf of the business entity.  
           Sec. 5.  Minnesota Statutes 1996, section 333.21, 
        subdivision 2, is amended to read: 
           Subd. 2.  Any certificate of registration issued by the 
        secretary of state under the provisions hereof or a copy thereof 
        duly certified by the secretary of state shall be admissible in 
        evidence as competent and sufficient proof of the registration 
        of such the mark, in any action or judicial proceedings in any 
        court of this state and shall be prima facie evidence of 
        registrant's ownership and exclusive right to use the mark on or 
        in connection with the goods or services described in the 
        certificate.  
           Sec. 6.  Minnesota Statutes 1996, section 333.23, is 
        amended to read: 
           333.23 [CONVEYANCES OF MARKS; RECORDATION, FEE, NECESSITY.] 
           The secretary of state shall record written conveyances of 
        any mark along with that part of the goodwill of the business in 
        connection with which the mark is used, and of the corresponding 
        application or registration which is presented for recording 
        along with a payment of a fee of $15 and shall issue in the name 
        of the assignee a new certificate for the remainder of the term 
        of the registration or of the last renewal thereof.  An 
        assignment of any registration under sections 333.18 to 333.31 
        shall be void as against any subsequent purchaser for valuable 
        consideration without notice unless it is recorded filed with 
        the secretary of state within three months after the date 
        thereof of the assignment or prior to such before the subsequent 
        purchase. 
           Sec. 7.  Minnesota Statutes 1996, section 333.24, is 
        amended to read: 
           333.24 [SECRETARY OF STATE'S RECORD OF MARKS.] 
           The secretary of state shall keep for public examination a 
        record of all marks registered filed or renewed under sections 
        333.18 to 333.31 in accordance with according to the 
        classification hereinafter set forth in sections 333.18 to 
        333.31.  Such The record of registration shall be is 
        constructive notice of registrant's claim of ownership of the 
        mark registered.  
           Sec. 8.  Minnesota Statutes 1996, section 333.25, is 
        amended to read: 
           333.25 [CANCELLATION OF MARKS.] 
           Subdivision 1.  The secretary of state shall cancel from 
        the register: 
           (1) after two years from the effective date of Laws 1959, 
        chapter 600, all registrations under prior acts which are not 
        renewed in accordance with according to sections 333.18 to 
        333.31; 
           (2) any registration concerning which the secretary of 
        state shall receive a voluntary request for cancellation thereof 
        from the registrant; 
           (3) all registrations granted filed under sections 333.18 
        to 333.31 and not renewed in accordance with the according to 
        its provisions thereof; 
           (4) in compliance with an order of a district court, any 
        registration concerning which the court shall find that: 
           a.  that (i) the registered mark has been abandoned,; 
           b.  that (ii) the registrant is not the owner of the mark,; 
           c.  that (iii) the registration was granted filed 
        improperly,; 
           d.  that (iv) the registration was obtained fraudulently,; 
           (v) the mark is or has become the generic name for the 
        goods or services, or a portion of the goods or services, for 
        which it has been registered; or 
           e.  that (vi) the registered mark is so similar, as to be 
        likely to cause confusion or mistake or to deceive, to a mark 
        registered by another person previously in this state or in the 
        United States Patent and Trademark Office, prior to before the 
        date of the filing of the application for registration by the 
        registrant hereunder under sections 333.18 to 333.31, and not 
        abandoned; provided, however, that should the registrant prove 
        that the registrant is the prior user of the mark or the owner 
        of a concurrent registration of the mark in the United States 
        Patent and Trademark Office covering an area including this 
        state, the registration hereunder shall not be canceled.; or 
           (5) a registration when a district court shall order 
        cancellation of a the registration on any ground.  
           Subd. 2.  No registration shall be canceled after the mark 
        has had substantially exclusive and continuous use by the 
        registrant for five years following the registration of said the 
        mark except for the reasons set forth in subdivision 1, 
        subsections clauses (1), (2), and (3) and subsections 
        clause (4)a, b and d thereof, items (i), (ii), and (iv), or 
        unless a mark has been registered in this state prior to before 
        use of registrant's mark or a mark has been registered in the 
        United States Patent and Trademark Office with the publication 
        date thereof prior to of it before the date of use of 
        registrant's mark, which marks when used on or in connection 
        with the goods or services of the respective registrants would 
        be likely to cause confusion, mistake, or deception, or unless 
        the mark is the common descriptive name of any article, 
        substance, or service.  
           Sec. 9.  Minnesota Statutes 1996, section 333.26, is 
        amended to read: 
           333.26 [CLASSIFICATION SYSTEM.] 
           For convenience of administration of sections 333.18 to 
        333.31, but not to limit or extend the applicant's or 
        registrant's rights, the secretary of state shall adopt the 
        classification system in effect in the United States Patent and 
        Trademark Office on the effective date of Laws 1959, Chapter 
        600, and shall revise this classification system to conform with 
        said the United States Patent and Trademark Office system as and 
        if changes are made therein in that system.  A single 
        application for registration of a mark may include any or all 
        goods or services with which the mark is actually being used 
        comprised in a single class, but in no event shall a single 
        application include goods or service with which the mark is 
        being used which fall within different classes.  
           Sec. 10.  [333.285] [INJURY TO BUSINESS REPUTATION; 
        DILUTION.] 
           (a) The owner of a mark that is famous in this state may, 
        subject to the principles of equity and upon terms the court 
        considers reasonable:  seek an injunction against another 
        person's commercial use of a mark or trade name, if the use 
        begins after the mark has become famous and causes dilution of 
        the distinctive quality of the mark; and obtain other relief as 
        provided in this section.  
           In determining whether a mark is distinctive and famous, a 
        court may consider factors such as, but not limited to:  
           (1) the degree of inherent or acquired distinctiveness of 
        the mark in this state; 
           (2) the duration and extent of use of the mark in 
        connection with the goods and services with which the mark is 
        used; 
           (3) the duration and extent of advertising and publicity of 
        the mark in this state; 
           (4) the geographical extent of the trading area in which 
        the mark is used; 
           (5) the channels of trade for the goods or services with 
        which the mark is used; 
           (6) the degree of recognition of the mark in the trading 
        areas and channels of trade in this state used by the mark's 
        owner and the person against whom the injunction is sought; 
           (7) the nature and extent of use of the same or similar 
        mark by third parties; and 
           (8) whether the mark is the subject of a state registration 
        in this state, or a federal registration under the Act of March 
        3, 1881, or under the Act of February 20, 1905, or on the 
        principal register.  
           (b) In an action brought under this section, the owner of a 
        famous mark is entitled only to injunctive relief in this state, 
        unless the person against whom the injunctive relief is sought 
        willfully intended to trade on the owner's reputation or to 
        cause dilution of the famous mark.  If willful intent is proven, 
        the owner is entitled to the remedies in this chapter, subject 
        to the discretion of the court and the principles of equity.  
           (c) The following are not actionable under this section:  
           (1) fair use of a famous mark by another person in 
        comparative commercial advertising or promotion to identify the 
        competing goods or services of the owner of the famous mark; 
           (2) noncommercial use of the mark; and 
           (3) all forms of news reporting and news commentary.  
           Sec. 11.  Minnesota Statutes 1996, section 333.29, 
        subdivision 1, is amended to read: 
           Subdivision 1.  Any district court may grant injunctions to 
        restrain infringement of registrant's rights and may require the 
        defendants to pay the registrant all benefits derived from 
        and/or damages suffered by reason of such infringement.  The 
        prevailing party may, in the discretion of the court, be awarded 
        a reasonable attorney's fee to be taxed by the court as a part 
        of the costs and merged into the judgment. An owner of a mark 
        registered under sections 333.18 to 333.31 may bring an action 
        to enjoin the manufacture, use, display, or sale of any 
        counterfeits or imitations of the mark, and a court of competent 
        jurisdiction may grant injunctions to restrain the manufacture, 
        use, display, or sale as the court considers just and 
        reasonable.  The court may require the defendants to pay to the 
        owner either or both of the following:  (1) all profits derived 
        from the wrongful manufacture, use, display, or sale; or (2) all 
        damages suffered by reason of the wrongful manufacture, use, 
        display, or sale.  The court may also order that counterfeits or 
        imitations in the possession or under the control of a defendant 
        be delivered to an officer of the court, or to the complainant, 
        to be destroyed.  The court, in its discretion, may enter 
        judgment for an amount not to exceed three times the profits and 
        damages and reasonable attorneys' fees of the prevailing party 
        if the court finds the other party committed the wrongful acts 
        with knowledge or in bad faith or otherwise as according to the 
        circumstances of the case. 
           Sec. 12.  [333.305] [FORUM FOR ACTIONS REGARDING 
        REGISTRATION; SERVICE ON OUT-OF-STATE REGISTRANTS.] 
           (a) Actions to require cancellation of a mark registered 
        according to sections 333.18 to 333.31 or in mandamus to compel 
        registration of a mark according to sections 333.18 to 333.31 
        shall be brought in the district court.  In an action in 
        mandamus, the proceeding shall be based solely upon the record 
        before the secretary of state.  In an action for cancellation, 
        the secretary of state shall not be made a party to the 
        proceeding but shall be notified of the filing of the complaint 
        by the clerk of the court in which it is filed and shall be 
        given the right to intervene in the action.  
           (b) In an action brought against a nonresident registrant, 
        service may be effected upon the secretary of state as agent for 
        service of the registrant according to the procedures 
        established for service upon nonresident corporations and 
        business entities under section 5.25. 
           Sec. 13.  [REPEALER.] 
           Minnesota Statutes 1996, section 325D.165, is repealed. 
           Presented to the governor March 19, 1998 
           Signed by the governor March 23, 1998, 10:36 a.m.